What's in a [Business] Name? Trademark Fair Use in Today's Digital Climate

• Author: Allison S. Lovelady
• Position: Allison S. Lovelady is a partner in the West Palm Beach office of Shullman Fugate. In addition to intellectual property, she focuses on defamation, privacy, and media issues. She can be reached at alovelady@shullmanfugate.com.
• Pages: 55-57

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©2019. Published in Landslide®, Vol. 11, No. 5, May/June 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or

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Here’s an easy one: a client e-mails you because she

would like to use a hashtag to promote her com-

pany’s new winter apparel line. Then, she tells you

the hashtag is #WinterIsComing. Is it permissi-

ble? The hashtag originates from the popular HBO

Game of Thrones franchise and, although arguably

not a prominent lead, is indisputably associated with the show.

But what if the client is not using the hashtag as a source iden-

tier for winter apparel? What about fair use?

Generally, trademark fair use occurs when an accused

infringer can show (1) it did not use the mark as a trade-

mark; (2) the use is descriptive of its goods or services; and

(3) it used the mark fairly and in good faith.1 In today’s fast-

changing digital climate, the selection and fair use of a mark

looks different. What if that same client’s mark is a #hashtag

or is a keyword simply used to generate website visitors?

And, a search can be problematic—searching for common

law uses of a mark may generate hundreds or thousands of

similar hashtags. What if the mark is, or was, a slogan that

summary judgment, the court found it clear that the defen-

dants’ use of “SSM Health” along with the phrase “Express

Clinic” tipped in favor of fair use, as “Express Clinic”

described a characteristic of the defendants’ product insofar

as the clinic provides medical treatment in a quick and conve-

nient setting, and not a source identier.

When a Mark Bears Resemblance to a Fictional

Business or Mark

Enter SpongeBob SquarePants, who collects his paycheck at

the ctional restaurant The Krusty Krab. This same restaurant

was the subject of the 2018 case Viacom v. IJR.4 Viacom, as

creator of SpongeBob SquarePants, was common law owner

of “The Krusty Krab” and sued IJR when it learned that IJR

intended to use “The Krusty Krab” as the name of a restau-

rant chain in California and Texas. The district court granted

summary judgment. In afrming summary judgment, the

Fifth Circuit analyzed whether Viacom had ownership in a

legally protectable mark, and whether IJR’s use of the mark

Allison S. Lovelady is a partner in the West Palm Beach ofce of Shullman Fugate. In addition to intellectual property, she focuses on

defamation, privacy, and media issues. She can be reached at alovelady@shullmanfugate.com.

What’s in a [Business]

Name? Trademark Fair Use

in Today’s Digital Climate

By Allison S. Lovelady

quickly turned viral on social media? The nature of social

media, ability to share, and easy access to all forms of content

quickly have blurred the line between fair use and infringe-

ment. In this article, we review recent cases interpreting

use of trademarks in today’s climate, including #hashtags,

domain names, and a viral video punchline.

In the #WinterIsComing example above, perhaps an

argument could be made that the hashtag is merely descrip-

tive of the apparel line as geared toward the winter season,

although not as obvious. “A descriptive term ordinarily names

a characteristic of a product or service” and is not used as a

trademark.2 For example, in Midwest Medical v. SSM Health

Care, the plaintiff owned a trademark for “Express Care of

Mt. Vernon” for walk-in health services.3 The defendants,

who were using the name “SSM Health Express Clinic” for

walk-in health services, posited that the phrase “Express

Clinic” was descriptive of the defendants’ services. On

created a likelihood of confusion as to the source, afliation,

or sponsorship.5 Indeed, how could a mark that is not “used in

commerce” as a source identier of a specic good or service

be used as a basis for infringement? In addressing a thresh-

old issue, the Fifth Circuit found that unregistered names for

items within a television show, even those items not featured

as a prominent lead, can form a basis for infringement. In

reaching that nding, the court noted that “The Krusty Krab”

appeared in 166 of 203 SpongeBob episodes, and stated that

“The Krusty Krab’s central role in the multi-billion-dollar

SpongeBob franchise [was] strong evidence that it is rec-

ognized in itself as an indication of origin.”6 The court also

pointed to other protectable but ctional supporting elements,

such as General Lee from Dukes of Hazard and Clark Kent’s

employer the Daily Planet. Based on the Fifth Circuit’s

holding, it seems likely that use of #WinterIsComing in con-

nection with an apparel line may not be permissible.